Some Additional Commentary on the German Courts’ Interpretation of Article 139 Regarding Stays of Injunctive Relief

In October, I published a post noting two recent articles discussing the “proportionality” defense to injunctive relief under the amended article 139 of the German Patent Act:  Peter Georg Picht & Jorge L. Contreras, Proportionality Defenses in FRAND Cases - A Comparative Assessment of the Revised German Patent Injunction Rules and US Case Law, and Martin Stierle & Franz Hofmann, The Latest Amendment to the German Law on Patent Injunctions: The New Statutory Disproportionality Exception and Third-Party Interests.  I also noted some two recent blog posts, one by Thorsten Bausch and one by Florian Mueller, which both discuss a July decision of the Düsseldorf Regional Court, in which the court denied hepatitis drug manufacturer Gilead a stay of injunctive relief in a case brought by patent owner NuCana.  In this case, which the two posts link to and which also is excerpted in 22/2022 GRUR 1665-68, the court concluded that the proportionality defense under article 139 is “subsidiary” to claims for compulsory licenses under article 24; and that a court must consider all of the relevant interests, including not only that of third parties but also that of the patent owner as well as the infringer’s conduct.  Here, the fact that the defendant had not first tried to negotiate a voluntary license outweighed the third-party interests.  Moreover, although Gilead had instituted an action for a compulsory license before the Patent Court, that action was still pending, and the court emphasized that article 139’s proportionality defense should not undermine article 24's compulsory licensing process.

Anyway, Marco Stieff recently published a short paper discussing the Gilead decision and expressing concern about some of its implications, titled Proportionality defence v compulsory licence: the decision of the Düsseldorf court, in Managing IP (available here).  A summary of Mr. Stieff’s article, in French, is also available in PIBD 1196-II-1.  In addition, Daniel Hoppe, Christian Holtz, and Christian Donle published an article titled Die Rechtsprechung der deutschen Instanzgerichte zum Patent- und Gebrauchsmusterrecht seit dem Jahr 2021 (“The Case Law of the German Courts of First Instance in Patent and Utility Model Law Since 2021”) in 12/2022 GRUR RR 517.  The article discusses some additional decisions on this topic rendered by German courts (including a June 30 decision also noted in the FOSS Patents post), following along much the same lines as in the Gilead case—with the Düsseldorf court reaffirming the subsidiarity of article 139 to compulsory licensing proceedings and its concern about infringers “hiding” behind the interests of third-parties, the consequences to whom are largely of the infringer’s own making (!).  Meanwhile, the Mannheim and Munich courts so far have shown no inclination to invoke proportionality in FRAND cases, since the infringer can demand a FRAND license, with the Munich court specifically noting the irrelevance of the patent owner’s status as a PAE.